Ex Parte Uchida et al

Board of Patent Appeals and Interferences

Mar 8, 2011

11078520 (B.P.A.I. Mar. 8, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/078,520 03/14/2005 Toru Uchida W1878.0205 9909
32172 7590 03/08/2011
DICKSTEIN SHAPIRO LLP
1633 Broadway
NEW YORK, NY 10019
EXAMINER
MARINI, MATTHEW G
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
03/08/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TORU UCHIDA and KOUICHI FURUTOH
____________________

Appeal 2009-008453
Application 11/078,520
Technology Center 2800
____________________

Before MAHSHID D. SAADAT, CARLA M. KRIVAK, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008453
Application 11/078,520

2
STATEMENT OF THE CASE
Appellants’ claimed invention relates to an automatic document
feeder having a handle section (Spec. 12:16-20).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. An automatic document feeder having an anterior side on
which a user accesses documents, said automatic document
feeder comprising:

a manuscript stacker adapted to stack one or more manuscripts,
the manuscript stacker having an anterior side toward said
anterior side of said automatic document feeder;

an outer frame structure on which said manuscript stacker is
placed; and

a handle section formed integrally with said outer frame
structure and preventing access to at least a portion of said
anterior side of said manuscript stacker;

wherein said automatic document feeder is secured to a platen
cover located above a housing of a manuscript scanning section
and movable with respect to said housing to have open and shut
states.

REJECTIONS
The Examiner rejected claims 1-4 and 6-9 under 35 U.S.C. § 102(b)
as anticipated by Rubscha (US 5,534,989).
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) based upon
the teachings of Rubscha and Kurando (US 5,832,356).
Appellants contend Rubscha does not teach or suggest “a handle
section formed integrally with said outer frame structure and preventing
Appeal 2009-008453
Application 11/078,520

3
access to at least a portion of said anterior side of said manuscript stacker,”
as recited in claim 1 (App. Br. 5).

ANALYSIS
The Examiner finds Rubscha teaches an automatic document feeder
10 including a handle section 114 capable of preventing access to at least a
portion of the anterior side of a manuscript stacker 20 (Ans. 3). Appellants
contend Rubscha’s handle section does not prevent a user from accessing at
least a portion of the anterior side of the manuscript stacker (App. Br. 5).
We agree.
As shown in Rubscha’s Figures 3 and 4, the handle section 114 is
positioned below the manuscript stacker 20, and thus does not prevent a user
from grasping or handling any portion of the manuscript stacker (App. Br. 5-
6). The Examiner argues it is irrelevant whether the handle section is
located below the manuscript stacker, because claim 1 does not specify the
location of the handle section (Ans. 7). However, claim 1 recites preventing
access to at least a portion of the manuscript stacker. Because Rubscha’s
handle section is below the manuscript stacker, a user can grasp or handle
any portion of the manuscript stacker. Therefore, Rubscha does not teach
this feature, and thus does not anticipate claim 1 and claims 2-4 and 6-9,
which depend therefrom.
With respect to the obviousness rejection, we agree with Appellants
that Kurando does not cure the deficiencies of Rubscha (App. Br. 5, 7).
Thus, the obviousness rejection of claim 5, which depends from claim 1, is
also reversed for the reason discussed above.

Appeal 2009-008453
Application 11/078,520

4
DECISION
The Examiner’s decision rejecting claims 1-9 is reversed.

REVERSED

kis

DICKSTEIN SHAPIRO LLP
1633 Broadway
NEW YORK, NY 10019